Ex Parte Izutsu

Patent Trial and Appeal Board

Mar 21, 2016

13459646 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/459,646 04/30/2012
513 7590 03/23/2016
WENDEROTH, LIND & PONACK, LLP,
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
FIRST NAMED INVENTOR
Masahiro IZUTSU
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2012_0661 6196
EXAMINER
SHIN, CHRISTOPHER B
ART UNIT PAPER NUMBER
2181
NOTIFICATION DATE DELIVERY MODE
03/23/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ddalecki@wenderoth.com
eoa@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAHIRO IZUTSU
Appeal2014-003057
Application 13/459,646
Technology Center 2100
Before MAHSHID D. SAADAT, CATHERINE SHIANG, and
KAMRAN JIVANI, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 6-8, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Introduction
The present invention relates to a mobile information communication
apparatus. See generally Spec. 1. Claim 6 is exemplary:
Appeal2014-003057
Application 13/459,646
6. An automobile comprising:
a dashboard;
a display unit attached to said dashboard; and
a cradle attached to said dashboard and configured to hold mobile
information and communication apparatus;
wherein said cradle has a first interface device for receiving a display
signal from the mobile information and communication apparatus held by
said cradle, and for transmitting the received display signal to said display
unit; and
wherein said display unit has a second interface device for receiving
the display signal transmitted by said first interface device, said display unit
being configured to display an image according to the received display
signal.
References and Rejections
MIMRAN US 7,053,866 Bl May 30, 2006
Claims 6-8 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by or, in the alternative, under U.S.C. § 103(a) as being obvious
over Mimran.
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Appeal2014-003057
Application 13/459,646
ANALYSIS 1
We have reviewed Appellant's arguments in the Briefs, the
Examiner's rejection, the Examiner's response to Appellant's arguments,
and the evidence of record. We concur with Appellant's conclusion that the
Examiner erred in finding Mimran teaches "wherein said cradle has a first
interface device for receiving a display signal from the mobile information
and communication apparatus held by said cradle, and for transmitting the
received display signal to said display unit," as recited in independent claim
6 (emphases added).
The Examiner maps the claimed "cradle" to Mimran' s cradle
members 19a and 19b. See Final Rej. 3; Ans. 7.2 The Examiner then maps
Mimran' s adaptor 10 to the claim element "a first interface device." See
Ans. 7.
Appellant correctly argues-and the Examiner does not dispute-that
Mimran's adaptor 10 is adapted to connect to a peripheral device (such as a
1 Appellant raises additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
2 In response to Appellant's arguments, the Examiner finds Mimran' s cradle
members 19a and 19b inherently hold a cradle. See Ans. 3-5. Inherency can
only be established when "prior art necessarily functions in accordance with,
or includes, the claimed limitations." In re Cruciferous Sprout Litig., 301
F.3d 1343, 1349 (Fed. Cir. 2002). Contrary to the Examiner's unsupported
finding, the cited Mimran portions do not necessarily teach a cradle being
held by cradle holding members 19a and 19b. As pointed out by Appellant,
Mimran merely states: "Arm rest 18 includes a pair of cradle holder
members l 9a and l 9b for holding and storing various [devices.]" Mimran
4:38--40 (emphasis added); see also App. Br. 3. That sentence constitutes
the only detailed description of the cradle holder members 19a and 19b in
the entire Mimran reference.
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Appeal2014-003057
Application 13/459,646
cell phone) on one end, and a heads up display (HUD) unit 20 on the other
end. See App. Br. 3; Mimran Figs. 1, 4; 2:54-63; 4:4:49-59. Therefore,
Mimran's adaptor 10 is not connected to Mimran's cradle members 19a and
19b. See App. Br. 3--4. In fact, the Examiner does not assert such
connection exists.
Therefore, under the Examiner's mapping, the claimed "cradle" is not
connected to the claimed "first interface." As a result, the Examiner fails to
show "said cradle has a first interface device for receiving a display signal
from the mobile information and communication apparatus held by said
cradle, and for transmitting the received display signal to said display unit,"
as required by the claim (emphases added). See App. Br. 3--4.
Because the Examiner fails to provide sufficient evidence to support
the rejection, we are constrained by the record to reverse the Examiner's
rejection of claim 6, and claims 7-8 for similar reasons.
DECISION
The Examiner's decision rejecting claims 6-8 is reversed.
REVERSED
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